Utility Models: Petty Patents
with a Big Impact
Patrick R. Jewik
Partner
June 11, 2014
© 2014 Kilpatrick Townsend
What is a utility model?
•  Definition (Wikipedia)
–  A utility model is a statutory monopoly granted for a limited
time in exchange for an inventor providing sufficient teaching
of his or her invention to permit a person of ordinary skill in
the relevant art to perform the invention.
–  The rights conferred by utility model laws are very similar to
those granted by patent laws, but are more suited to what
may be considered as "incremental inventions".
–  Terms such as "petty patent", "innovation patent", "minor
patent", and "small patent" may also be considered to fall
within the definition of "utility model".
2
What is a utility model?
3
From 2010-2012, what was the worldwide
growth rate of utility model filings?
• 
• 
• 
• 
• 
(a) 40-50%
(b) 30-40%
(c) 20-30%
(d) 10-20%
(e) less than 10%
4
What are the general characteristics
of a utility model?
• 
• 
• 
• 
• 
Uses claims to protect an invention
Shorter patent term than patent
Often lower inventive standard than patent
No substantive examination
Less expensive
–  Virtually no prosecution costs
•  Fast registration
•  Processes are generally not protected
5
Utility Models vs. Patents
Patents
Utility Models
Term of Protection
Typically 20 years from the
filing date.
Typically 10 years from the
filing date.
Procedure
A search and examination are
conducted.
Searches and examinations
are generally not
conducted.
Time from filing to patent or
registration
Typically 2-3 years or more.
Typically less than 1 year.
Cost
Substantially higher due to
prosecution costs.
Significantly lower than
patents.
Annuities due in years 10-20.
No annuities for years 10-20,
since protection ends.
Yes
No
Processes protectable?
6
How effective are utility models?
•  China
–  Chint / Schneider Electric Utility Model
Litigation
•  Injunction issued against Schneider
•  Chint awarded $49M in damages
–  Invalidity Statistics
From “China’s Utility Model Patent System: Innovation Driver or Deterrent,”
November 2012, by the U.S. Chamber of Commerce
7
Got utility models?
•  Yes
–  Germany, China, France, Japan, Taiwan
and Korea
•  No
–  United States, United Kingdom, the
Netherlands, Canada
8
Brief comparison of utility models in
major industrialized countries
Germany
Japan
France
Korea
Taiwan
China
Term
10 years
10 years
6 years
10 years
10 years
10 years
Different standard
for obtaining?
Yes
Yes
No
No
No
Yes
9
What percentage of Chinese utility
models were filed by foreigners?
• 
• 
• 
• 
• 
(a) between 50-80%
(b) between 30-50 %
(c) between 10-30 %
(d) between 1-10%
(e) less than 1%
10
When should one consider filing for a
utility model instead of a patent?
•  Invention will likely not have a commercial
lifetime beyond 10 years
–  E.g. toys
•  When immediate protection is important
•  When invention is valuable
–  Germany and China
•  May apply for both patent application and utility model
11
When should one consider filing for a
utility model instead of a patent?
•  When patenting resources are limited
•  When a large portfolio of intellectual property is
needed for licensing and deterrence
•  When the patentability of the invention is
questionable (e.g., arguably obvious), but
protection is still desired
•  When an easy design around is noticed after
filing or after getting a patent
–  Most foreign jurisdictions (e.g., Europe) typically do not allow
one to pursue claims that are broader than those as originally
filed
•  To cost effectively prevent patent hijacking
12
Utility Model Cost Savings
•  Cost savings example
–  File one patent application in Germany,
Japan, China, and Taiwan
•  $5000 per response, two responses per case
•  Total cost for responses = $40,000
–  File one utility model application in the
same countries
•  Essentially no response costs
–  Huge budgetary impact when large foreign
portfolios are maintained
13
Mechanics of Filing For Utility Model
•  File like a regular foreign patent application
–  Delete method claims prior to filing if application is derived
from US utility application
•  Add dependent claims to ensure that some
claims will be patentable
•  Recommend having a prior art search
performed before filing to ensure claims are
valid
–  No examination process
–  May have to prove to court that search was conducted
–  Have patentability opinion prepared ahead of time
14
Are utility models good for society?
•  Yes
–  Protects minor inventions that benefit
society, but not to the extent of patentable
inventions
•  No
–  Minor inventions should not be patentable
or protectable
–  Inventions that lack an inventive step or are
obvious should be public domain
intellectual property
15
Thank you!
ATLANTA
AUGUSTA
CHARLOTTE
DENVER
LOS ANGELES
NEW YORK
RALEIGH
SAN DIEGO
SAN FRANCISCO
SEATTLE
SHANGHAI
SILICON VALLEY
STOCKHOLM
TOKYO
WALNUT CREEK
WASHINGTON D.C.
WINSTON-SALEM
www.kilpatricktownsend.com
Patrick Jewik
[email protected]
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